Ex Parte Boston et al

Patent Trial and Appeal Board

Sep 24, 2012

10180617 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte STEPHEN B. BOSTON, DAVID EARL BLASCHKE,
MICHAEL WAYNE BROWN, ANDREW DOUGLAS HATELY,
and MICHAEL A. PAOLINI
_____________

Appeal 2009-013596
Application 10/180,617
Technology Center 2400
______________

Before ERIC S. FRAHM, BRYAN F. MOORE, and JOHN G. NEW,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-013596
Application 10/180,617

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claim 1, the sole claim on appeal. Claims 2-18 have been
canceled.
We reverse.
Appellants’ Invention
The invention is directed to a method of controlling or operating a
personal video recorder (PVR) (e.g., a DVR or Tivo). See Spec. 2:26-3:28;
Figs. 1a, 2a, 2b, and 3. Claim 1 is representative of the invention and is
reproduced below, with emphasis added to the disputed portion of the claim:
1. A method of controlling operation of a personal video
recorder ("PVR"), the method comprising:

identifying a message point in operation of a PVR, the
message point having an associated message point
identification, the identifying further comprising encountering
the message point identification in operation of PVR
application software;

selecting, in dependence upon the message point
identification, a message to be transmitted, the message
indicating that a user has a deficit amount for the user's PVR
storage space, the deficit amount specifying the amount that a
storage space requirement for a show to be recorded exceeds
the user's free space;

transmitting the selected message to the user, the
message comprising a non- blocking, asynchronous post
message or a blocking, synchronous send message, wherein the
message created by the PVR is transmitted to the user through
a Small Messaging Service supported by a telecommunications
service;
Appeal 2009-013596
Application 10/180,617

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receiving a response to the transmitted selected message,
the response specifying the user's preference in administering
the deficit amount;

selecting, in dependence upon the response, a command
to be executed, the command administering the user's deficit
amount; and

executing the command.

Examiner’s Rejection
The Examiner has rejected claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Robarts (US 2005/0278741 A1), Plourde, JR. (US
2003/0110504 A1), and Janevski (US 2003/0156827 A1). Ans. 3-5.1

ISSUE
Appellants argue, on pages 4-8 of the Brief, the Examiner’s rejection
is in error as the combination of references, and more specifically Janevski,
does not teach or suggest a message created by the PVR being “transmitted
to the user through a Small Messaging Service [(SMS)] supported by a
telecommunication service,” as claimed?2

1 Throughout this decision we refer to the Answer dated April 17, 2009
(“Ans.”).
2 Throughout this decision we refer to the Appeal Brief dated November 25,
2008 (“Br.”).
Appeal 2009-013596
Application 10/180,617

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ANALYSIS
We have reviewed Appellants’ arguments in the Brief and we concur
with Appellants’ conclusion that the Examiner erred in finding that the
combination of references, and specifically Janevski, teaches or suggests a
message created by the PVR being “transmitted to the user through a Small
Messaging Service [(SMS)] supported by a telecommunication service,” as
claimed.
The Examiner in rejecting independent claim 1 finds Janevski (Fig. 1;
¶¶ [0043] and [0062]) teaches a message created by the PVR being
“transmitted to the user through a Small Messaging Service [(SMS)]
supported by a telecommunication service,” as claimed (Ans. 5). Appellants
argue that Janevski fails to disclose a message created by a PVR being
transmitted to a user through a Small Messaging Service (SMS) supported
by a telecommunication service, as set forth in claim 1 (Br. 6-7).
Although Janevski discloses a public switched telephone network 120
(¶ [0043]), as well as a synchronized viewing session (¶ [0062]), paragraphs
[0043] and [0062] of Janevski are silent with regard to any form of SMS
messaging. The Examiner has not provided evidence or argument to rebut
this argument by Appellants. Thus, we are persuaded by Appellants’
argument that the Examiner has not shown Janevski teaches or suggests a
message created by the PVR being “transmitted to the user through a Small
Messaging Service [(SMS)] supported by a telecommunication service,” as
set forth in claim 1. Accordingly, we will not sustain the Examiner’s
rejection of independent claim 1.

Appeal 2009-013596
Application 10/180,617

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CONCLUSION
Appellants have persuaded us of error in the Examiner’s decision to
reject claim 1.

DECISION
The decision of the Examiner to reject claim 1 is reversed.

REVERSED

msc